Two more judges from the U.S. Court of Appeals for the Federal Circuit have weighed in with criticisms of October's blockbuster appointments clause decision Arthrex v. Smith & Nephew, even as the full court weighs whether to reconsider the case en banc.

Judges Todd Hughes and Evan Wallach issued a concurring opinion Friday saying they don't agree that the U.S. Patent and Trademark Office's 275 administrative patent judges are principal officers who are subject to confirmation by the U.S. Senate. Given the USPTO director's "significant control" over their activities, "APJs are inferior officers already properly appointed by the Secretary of Commerce," Hughes wrote in Polaris Innovations v. Kingston Technology.

But in an ominous development for the Patent Trial and Appeal Board judges, Hughes and Wallach added that if the Arthrex decision is right, and they're principal officers, then they have "grave doubts" about the remedy prescribed by Arthrex to fix the appointment problem.

Judge Kimberly Moore held in Arthrex that appointments could be cured by severing civil service protections for the judges from the Patent Act, thereby giving the PTO director more supervisory control. The upshot of her opinion was that the APJs would keep their jobs, but that the PTAB would have to rehear some 150 administrative challenges to patent validity that aren't yet final on appeal.

Hughes wrote that he didn't find that approach persuasive. "It seems unlikely to me that Congress, faced with this Appointments Clause problem, would have chosen to strip APJs of their employment protections, rather than choose some other alternative," he wrote. But given that Congress can make another choice if it disagrees, he said that he "reluctantly" agrees with the Arthrex remedy.

Arthrex, Smith & Nephew and the U.S. government have petitioned the appellate court for en banc review. Briefing concluded in early January. Arthrex wants the court to shut down the PTAB until Congress fixes the appointments problem. Smith & Nephew and the government say there is no appointments problem. The government also argues that only the few litigants who raised the appointments issue directly to the PTAB should benefit from any remedy.

Hughes' opinion in Polaris follows a brief per curiam order remanding the case to the PTAB pursuant to Arthrex. Hughes then wrote separately, with Wallach concurring.

The opinion reads as if it could be a dissent from denial of en banc review in Arthrex. Hughes argues that the Supreme Court's principal officer test is not as rigid as laid out in Arthrex, and that PTAB judges don't run afoul of it. As for remedy, "I recognize that the Arthrex panel considered several potential fixes and chose the one it viewed both as constitutional and minimally disruptive," he wrote. "But removing long-standing employment protections from hundreds of APJs is quite disruptive. Given no clear evidence that Congress would have intended such a drastic change, I would defer to Congress to fix the problem."

Hughes went on to propose simple fixes Congress could make to clear up any doubts: It could grant the USPTO director unilateral review over all PTAB decisions. It could make the PTAB chief judge a presidential appointee and grant the chief power to review all decisions. Or it could provide for presidential appointment of all APJs.

Hughes and Wallach are the third and fourth members of the court to publicly air criticisms of the Arthrex decision. Judges Timothy Dyk and Pauline Newman argued in a December opinion that the Arthrex remedy should be applied retroactively, requiring no rehearings.

Polaris is represented by Matthew Powers of Tensegrity Law Group. Fish & Richardson partner David Hoffman argued the appeal for Kingston Technology.

Ropes & Gray partner Matthew Rizzolo, who's not involved in the case, said the odds of en banc review for Arthrex appear to be dwindling, given a Federal Circuit order earlier last week narrowing the field of cases that would be eligible for rehearing, and Hughes' agreement to sign onto the Arthrex remedy, despite his concerns.

One way to read Hughes' opinion, he added, is that the Supreme Court's principal/inferior officer test is less than clear, and that the high court may be best situated to apply it to the PTAB. A cert grant could also add pressure to Congress to devise a legislative fix, Rizzolo added.